Hoffman Warnick has represented a number of universities, including one of the US’s highest ranked research universities, and a wide range of university technology spin-offs.  We understand the challenges of balancing protection of university IP and providing for a robust technology transfer program, and we understand the pitfalls for startups licensing technology from a university.

Some of our services in this area include: IP portfolio counseling; IP procurement (patents, copyrights, trademarks) – domestic and international; trade secret programs; guidance on university spin-off companies; license negotiations; opinions: freedom-to-operate (clearance), patentability, invalidity, non-infringement, unenforceability; university-faculty IP dispute resolution; pre-litigation negotiations; prior art searches; disclosure review and analysis; faculty and student IP education programs; IP policy guidance; and agreement drafting and review including non-disclosure agreements, licenses, and joint development agreements.


The Challenge: A university spinoff requested that we assist in evaluating an inventorship dispute on a patent application between management of the spinoff and university faculty.

Services Provided: Hoffman Warnick conducted an extensive investigation of the inventorship issues including review of invention disclosures, filed patent applications, and numerous interviews with the spinoff management and the university staff.

Results: The firm recommended revision of the patent application inventorship, and assisted in revising the client’s technology transfer license with the university in a mutually beneficial manner.


The Challenge: A research university technology transfer office informed us of the immediate need for the filing of a number of patent applications due to a previously unannounced conference presentation by a university faculty member.

Services Provided: Hoffman Warnick prepared the patent applications on an expedited schedule and filed the applications prior to the disclosure at the conference.  The firm also subsequently conducted an educational series for the university faculty to educate them regarding IP deadlines.

Results: The patent applications were prosecuted to issuance, and the incidence of need for expedited patent application filings have been greatly reduced, bringing much relief to the university tech transfer office.